Forex Capital Markets LLC v. Xu Zhemwu
Claim Number: FA0506000491355
PARTIES
Complainant
is Forex Capital Markets LLC, (“Complainant”), Financial Square,
32 Old Slip, 10th Floor, New York, NY 10005.
Respondent is Xu Zhemwu (“Respondent”), Longgang, Shenzen, Guangdong
518001, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <fxcm.net>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 8, 2005.
On
June 3, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <fxcm.net>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
June 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 29,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@fxcm.net by e-mail.
A
timely Response was received and determined to be complete on June 17, 2005.
Respondent
submitted an electronic copy of the Response, which is not in accordance with
ICANN Rule 5(a). Therefore, the Panel
may choose to accept or deny the deficient Response, as it deems
appropriate.
On June 24, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s
domain name, <fxcm.net>, uses a word mark identical to the duly
registered and trademarked word mark FXCM.
FXCM is registered and trademarked with the United States Patent and
Trademark Office.
The
mark FXCM is registered and trademarked for the exclusive use of its principals
and in accordance with the goods and services provided by Forex Capital Markets
LLC who has registered the mark.
Respondent has no affiliation with the trademarked company and has no
legitimate rights to the mark. The
Respondent has also registered the domain having no intentions to provide any
bona fide offering of goods and services.
<fxcm.net> has been registered since April of 2002, though
the domain does not have an active website.
Furthermore, the Respondent is not, or has not been, commonly known by
the domain name, nor does the Respondent make or have rights to, any legitimate
noncommercial or fair use of the domain name as clearly exhibited by
Respondent’s lack of use of the domain name in any form.
Respondent
has demonstrated that he has registered the domain name in bad faith.
Complainant has contacted Respondent for the purposes of acquiring or
transferring the corresponding domain name.
Respondent in turn responded with a request for transference or sale for
an amount that far exceeds the Respondent’s documented out-of-pocket costs directly
related to the registration of the domain name. Respondent requested $80,000 U.S. Dollars for sale or
transference of the domain name.
Respondent
has registered the domain name in order to prevent Complainant from reflecting
the mark in a corresponding domain name as demonstrated by the fact that the
domain name has never been active in the course of over 3 years of registration
in any form, nor is it currently active.
B.
Respondent
Respondent
states that he registered <fxcm.net> in China. The website means “Forex Chinese
Market”. Respondent does business in
China, using Chinese, and the website is registered with the Government of P.
R. China. Respondent does business
within the law of China. Complainant
does its business outside of P.R. China.
Complainant’s business is not permitted in P.R. China. There is no conflict between the business of
Complainant and Respondent. Respondent
has done business for several years in China within the law.
For
the price usd $80,000, to weigh a website is reasonable. Respondent multiplies usd $3000 per member
and his website has over 27,000 members in China.
C.
Additional Submissions
None
FINDINGS
1. Complainant does not state the specific
nature of its organization and business in the Complaint but it appears that
Complainant is an international commodity trading and exchange services
operated for others, integration futures exchange services, international stock
exchange price quotation, international exchange and monetary services, foreign
currency exchange and advice, integration financial clearing house services,
financial services, namely investment fund transfer and transaction
services. How one engages to employ
such services is not alleged.
2. Respondent does not state the nature of
his business.
3. The <fxcm.net> domain name
is identical to Complainant’s FXCM mark.
4. The <fxcm.net> domain name
cannot be reached on the Internet in the English Language. It can only be reached in the Chinese text.
5. Complainant fails to prove that
Respondent has no rights or legitimate interests in the disputed domain name.
6. Complainant fails to prove that the
disputed domain name was registered in bad faith.
7. The Complaint must be dismissed.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant must first prove that it has
rights in a mark, which is identical or confusingly similar to the disputed
domain name. See Policy, ¶4(a). Complainant proves this element by
submission of documents showing that the Mark, FXCM, was registered with the
United States Patent and Trademark Office on September 17, 2002, with filing
date of September 9, 2001. Complainant
establishes that it has rights to the FXCM Mark as evidenced by the
registration. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Smart Design LLC v. Hughes, D2000-0993
(WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require
Complainant to demonstrate “exclusive rights” but only that Complainant has a
bona fide basis for making the Complaint in the first place); see also Men’s
Wearhouse, Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept. 16, 2002) (which
stated “Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”).
Respondent makes no attempt to rebut the
presumption that the Mark, FXCM, is valid and distinctive.
The only difference between the <fxcm.net>
domain name and Complainant’s Mark, FXCM, is the addition of the term “.
NET.” The precedent is clear that the
addition of the top level of the domain such as “. net” or “.com” does not
affect the domain name for the purpose of determining whether its identical or
confusingly similar to a mark. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
FXCM and <fxcm.net> are
identical.
Complainant prevails under Policy, ¶
(4)(a)(i).
Complainant bears the burden of proof on
this issue. See Policy, ¶
(4)(ii). However, once a
complainant makes a showing that respondent is without rights or legitimate
interests in respect of the domain name, the burden shifts to respondent to
come forward with evidence to carry this point for Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Complainant contends that Respondent has
no affiliation with Complainant; that Respondent registered the domain name
having no intentions to provide any bona fide offering of goods and services;
that the domain name does not have an active website; that Respondent is not
known as <fxcm.net>; and that Respondent has not made any
legitimate noncommercial or fair use of the domain name. Complainant presents no evidence to support
any of these allegations.
Respondent asserts that he uses the
domain name in China and has done so for several years. He further alleges that his website has
27,000 members. Respondent presents no
evidence to support these allegations.
One attempting to connect with <fxcm.net>
on the Internet encounters the message that one can only connect by
downloading “Chinese (Simplified) Text Display Support.” This supports the inference that the website
is active in the Chinese language as contended by Respondent.
The true issue in this domain name dispute case is contained
in the cease and desist letter sent by Complainant to Respondent on May 28,
2002. This letter is attached as an
exhibit to the Complaint. The letter
states as follows: “Further, be advised
that your are currently in violation of the ‘Introducing Agreement’ that you
signed with FXCM on April 21, 2002.
Under the terms of the agreement, you agreed to introduce customers
exclusively to FXCM and as of today your website indicates that you have been
introducing customers to CMC, GCI, SexoBank, CMS and others. We are aware that you have purchased the
domain name www.fxcm.net, and currently use it to run a Forex introducing
brokerage business. FXCM would like to
settle this matter as quickly and fairly as possible and would like to suggest
the following: 1. You will introduce customers EXCLUSIVELY to
Forex Capital Markets, a Limited Liability Corporation in New York State. 2.
You will include a statement on the homepage of your site, stating that
Forex Capital Markets is the clearinghouse and you are the introducing
broker—accurately explain the differences between the Forex Chinese Markets and
Forex Capital Markets. FXCM will
consider it an act of good faith on your part if you meet the aforementioned
conditions and we will consider this matter closed. FXCM is not waiving any legal rights by making these
suggestions…”
Complainant fails to include in its
pleadings the aforementioned “Introducing Agreement.”
It is obvious, from the content of the
letter, that the parties to this dispute entered into a contract known as an
“Introducing Agreement” whereby Respondent could “introduce” customers to
FXMC. Without the “Introducing
Agreement” is it not possible to determine just what rights or legitimate
interests Respondent may have in the domain name.
The actual dispute between the parties
appears to be a breach of contract action.
An ICAAN panel is without jurisdiction or venue to decide such a
dispute. The Uniform Name Dispute
Resolution Policy is limited in scope.
It provides a remedy only on issues over registration and use of an
Internet domain name under the terms and conditions set out in the Policy. It does not, and could not, provide the
power to decide a breach of contract action.
See Nicholas v. Perricone, M.D., Hirst, FA095104 (Nat. Arb. Forum
Sept. 1, 2000) (which held that “The scope of the Policy is narrow. It reaches only those disputes involving bad
faith domain name registrations. Except
where registrations of domain name is made with bad faith intent to profit from
another’s trademark, the Policy leaves
the resolution of ordinary trademark disputes to the courts. While a court of competent jurisdiction may
ultimately find that Respondent’s use of the domain names violated
Complainant’s intellectual property rights, such a dispute simply does not fall
within the scope of the Policy.”).
Complainant fails to prove that
Respondent has no right to or legitimate interests in the domain name <fxcm.net>.
Respondent prevails under Policy, ¶
(4)(ii).
Complainant
bears the burden of proof under Policy, ¶ (4)(iii). Complainant may prove this element in any of the ways set out in
Policy, Paragraph (b) or by any other methods that illustrate bad faith.
It is clear from the evidence presented
by Complainant that Complainant and Respondent entered into a contractual
arrangement whereby Respondent was authorized by Complainant to “introduce
customers exclusively to FXCM” in China.
At the time Respondent registered the <fxcm.net> domain
name, it can be inferred that Respondent could take such action as necessary to
accomplish the introduction of customers to Complainant in China. In registering the domain name, it can be
inferred that it was registered to assist Respondent in such introductions of
customers. There is no evidence
presented to illustrate that under the “Introducing Agreement” between the
parties, that Respondent was not authorized to register a domain name including
Complainant’s Mark.
Under the inference that Respondent
registered the domain name to accomplish the purposes set out in the
“Introducing Agreement”, the registration cannot be seen as a bad faith
exercise on the part of Respondent without some evidence to the contrary. There is no evidence to the contrary.
As to the contention that Respondent
offered to sell the domain name for an amount in excess of his out-of–pocket
registration expenses, the contention is not proved. There is no evidence presented to show that the domain name was
registered primarily for the purpose of selling it, which is a necessary element
of proof. See Mark Warner 2001 v. Larson,
FA 94826 (Nat. Arb. Forum Nov. 15, 2000);
see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July
13, 2000). Complainant initiated
contact with Respondent and Respondent responded with an offer to sell the
domain name. That factual situation,
without more, fails to show bad faith. See
Puky GmbH v. Agnello, D2001-1345 (WIPO Jan 3, 2002); see also Coca-Cola
Co. v. Svensson, FA 103933 (Nat. Arb. Forum Feb. 27, 2002).
“Given the truncated nature of UDRP
proceedings and the inability of the parties to fully litigate allegations of
breach of fiduciary duty, breach of contract and the original rightful
ownership of the domain name, Complainant has not proven that the domain name
has been registered and is being used in bad faith. If, because of the nature of the claims, Complainant believes
that it is entitled to own the domain name it should pursue its claims, in a
forum (e.g., court) that is more appropriate for such claims.” This reasoning set out in Latent
Technology Group, Inc. v. Bryan Fritchie, is found to be applicable to this
case. See FA 95285 (Nat. Arb. Forum
Sept 1, 2000); see also Document Technologies, Inc. v. International Electronic
Communications Inc., D2000-0270 (WIPO June 6, 2000); see also Inter
Continental Hotels Corp. v. Khalid Ali Soussi, D2000-0252 (WIPO July 5,
2000).
Respondent prevails under the provisions
of Policy ¶ (4)(iii).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 8, 2005
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